DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 3/31/2026 has been entered.
AIA Status of the Claims
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
In Applicant’s response reply filed on 7/21/2025, Applicant elected the following compound species
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which reads on claims 62-67, 69-70, 73, 78-80 and 91-92.
As discussed in the previous Action mailed on 8/22/2025, the closest prior art is CAS RN 1332176-80-3 (entered into STN on 9/14/2011; of record), having the following structure:
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, which differs from Applicant’s elected species in that R1 is cyclobutyl as opposed to bicyclopentanyl.
Yet, considering that CAS RN 1332176-80-3 is merely disclosed as a compound without any associated activity, there would have been no obvious reason to modify the compound by replacing the cyclobutyl of R1 with bicyclopentanyl to arrive at Applicant’s instantly elected compound species.
As such, the elected species is determined to be free of the art and non-obvious.
Accordingly, in the Action mailed on 8/22/2025, the search was expanded as called for under current Office Markush practice – a compound-by-compound search – to include at least a single additional species (M.P.E.P. § 803.02), the additionally identified species being:
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; and
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.
In Applicant’s response filed 11/21/2025, Applicant amended the claims to exclude the above prior art compounds and overcome the rejections of claims based thereon.
Accordingly, in the Action mailed on 12/11/2025, the search was again expanded as called for under current Office Markush practice – a compound-by-compound search – to include the following compound species:
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In Applicant’s response filed 3/31/2026, Applicant has amended the claims to exclude the above prior art compounds and overcome the rejections of claims based thereon.
Accordingly, in the instant Action, the search has again been expanded as called for under current Office Markush practice – a compound-by-compound search – to include at least a single additional species (M.P.E.P. § 803.02). That species is
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wherein, in formula (I), X is N; R1 is unsubstituted carbocyclyl and R2 is aryl substituted with C1 alkyl (i.e., “wherein: (2) each of R1 and R2 is independently
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and
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); R3 is hydrogen; R4 is hydrogen; and m is 2 – which reads on pending claims 62-67.
Since the search has not been expanded beyond the additional species identified above, claims 69-70, 73, 78-80 and 91-92, which are directed to the elected species but which do not include the additional species above, are objected to as indicated below, and have not been further examined.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claims 62-67 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS RN 309266-29-3 (entered into STN on 12/18/2000).
Claim 62 is drawn to a compound of formula (I) which embraces the following compound species:
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, wherein X is N; R1 is unsubstituted carbocyclyl and R2 is aryl substituted with C1 alkyl (i.e., “wherein: (2) each of R1 and R2 is independently
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and
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); R3 is hydrogen; R4 is hydrogen; and m is 2 – which reads on pending claims 62-67.
The compound is taught by CAS RN 309266-29-3.
Accordingly, claims 62-67 are anticipated.
Claim Objections
Claims 69-70, 73, 78-80 and 91-92 are objected to as depending from a rejected base claim. Since the search has not been expanded beyond the additional species identified above, claims 69-70, 73, 78-80 and 91-92, which are directed to the elected species but which do not include the additional species above, have not been further examined.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CRAIG D RICCI whose telephone number is (571) 270-5864. The examiner can normally be reached on Monday through Thursday, and every other Friday, 7:30 am - 5:00 pm ET.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bethany Barham can be reached on (571) 272-6175. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CRAIG D RICCI/Primary Examiner, Art Unit 1611
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